adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The American Automobile Association Inc. v. Wanjun Li

Case No. D2010-1481

1. The Parties

Complainant is The American Automobile Association Inc. of Heathrow, Florida, United States of America, represented by Covington & Burling, United States of America.

Respondent is Wanjun Li of Issaquah, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <aaaautoinsurance.net> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2010. On September 3, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On September 7, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2010.

The Center appointed R. Eric Gaum as the sole panelist in this matter on October 8, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, The American Automobile Association, Inc. (“AAA”), owns U.S. federal trademark registrations (many of which are incontestable, see 15 U.S.C. § 1065) and common law rights in the United States in its AAA and associated trademarks, which it has used in commerce in connection with a broad variety of goods and services, including automotive, insurance, travel, financial, and discount goods and services.

Complainant is the owner of U.S. Trademark Registration No. 829,265, for the mark AAA, which was registered on May 23, 1967 for automobile association services rendered to travelers; placing insurance with underwriters; disseminating travel information and making travel arrangements.

The domain name at issue is currently registered to Wanjun Li, an individual residing in the state of Washington (“Respondent”). Respondent registered the <aaaautoinsurance.net> domain name on August 14, 2006.

5. Parties’ Contentions

A. Complainant

Complainant has used its AAA trademarks in commerce since at least 1902. As a result of Complainant’s history and experience providing high quality products and services, as well as Complainant and its member clubs’ continuous and extensive advertising, promotion, and sales of such products and services under the AAA marks, these marks are valuable and famous in the United States and abroad.

In or around January 2010, Complainant first became aware that Respondent registered and was using the domain name <aaaautoinsurance.net> — purportedly to host an “auto insurance blog” offering information on automobile insurance services. In reality, the website primarily displays pay-per-click advertisements for Complainant’s competitors in the automobile insurance industry along with minimal generic content regarding the automobile insurance industry copied from a third party website, available at <http://www.ezinearticles.com>.

On March 24, 2010, Complainant sent a letter that informed Respondent of Complainant’s rights in its trademarks and requested that Respondent cease use of the domain name and transfer it to Complainant. In a March 29, 2010 reply, Respondent acknowledged its registration of the domain name but claimed that its use does not violate ICANN’s policy because “AAA” does not appear in the website’s content.

Complainant’s April 1, 2010 response explained that Respondent violated ICANN’s policy through: (1) registration and use of a domain name confusingly similar to Complainant’s trademarks for the purposes of commercial gain; (2) registration of the domain name despite actual or constructive knowledge of Complainant’s rights in the AAA trademarks; and (3) disruption of Complainant’s business through use of the domain name to display pay-per-click advertisements for Complainant’s competitors. Respondent never responded to this letter.

Despite Complainant’s multiple communications, Respondent continues to use <aaaautoinsurance.net> to host pay-per-click advertisements that direct users to Complainant’s competitors and in fact renewed its registration for the domain name for an additional year in August.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, a “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or a service in which Complainant has rights;

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from Respondent’s failure to reply to Complainant’s assertions and evidence or to otherwise contest the Complaint. The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064 (January 20, 2003). As a result of Respondent’s default, the Panel may even accept as true all of the reasonable allegations of the Complaint. Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009 (February 29, 2000).

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of U.S. trademark registrations for the AAA trademark since 1967 with use claiming back to 1902 (U.S. Registration Nos. 829,265 and 2,158,654). Based on the registered trademarks and Complainant’s continuous use of the marks, the Complainant clearly has rights in the marks.

It is well established that a domain name is confusingly similar to a trademark when the domain name includes the entire mark, even if one or more generic terms are added. See, e.g., Am. Auto Ass’n, Inc. v. Rami Smair, WIPO Case No. D2009-0294 (April 29, 2009) (<aaainsurance.info>, <insurance-aaa.com>, and <insurance-aaa.info> domain names confusingly similar to AAA marks for insurance services); Am. Auto. Ass’n, Inc. v. Nevis Domains LLC.,
WIPO Case No. D2006-0489, supra (<aaaautomotive.com> domain name confusingly similar to the AAA marks for automotive products and services).

Moreover, although the risk of consumer confusion exists any time a mark is combined with a generic or descriptive term in a domain name, that risk is particularly great where, as here, the terms describe a central aspect of Complainant’s business. Such a combination “in all likelihood heightens the confusion.” Am. Auto. Ass’n, Inc. v. PSI,
WIPO Case No. D2008-1931 (February 6, 2009) (AAAAUTOREWARDS.COM confusingly similar to AAA marks for automotive services); see also Am. Auto. Ass’n, Inc. v. AAA-Vacationsunlimeted,
WIPO Case No. D2009-0373 (May 3, 2009) (finding the confusing similarity to be “especially acute” where the generic term added to Complainant’s mark relates to Complainant’s services). Here, adding the generic terms “auto” and “insurance” will likely heighten consumer confusion because AAA is well known for offering automotive and insurance products and services to its members and the public.

The Panel finds that the domain name is confusingly similar to the AAA trademarks, and that Complainant has established it has rights in the trademarks, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii).

There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name. Presumably, Respondent would have provided a response to the Complaint had it had any rights or legitimate interests.

There is no evidence that Respondent is commonly known by the domain name. See UDRP Policy at 4(c)(ii). Respondent did not register the domain name under a name containing the AAA marks; rather, the domain name is registered to Wanjun Li. These names bear no relation to the AAA marks, confirming that Respondent does not have rights or a legitimate interest in the disputed domain name. Am. Auto. Ass’n, Inc. v. Nevis Domains LLC.,
WIPO Case No. D2006-0489 (June 13, 2006). Moreover, Respondent’s admission that its website does not include “the wording of ‘AAA’” is further evidence that Respondent is not commonly known by the domain name.

Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. See UDRP Policy at 4(c)(i), (iii). Rather, Respondent is using the domain name to host pay-per-click advertisements for goods and services that compete with those offered by Complainant. A pay-per-click advertising website “constitutes neither bona fide offerings of goods or services under [UDRP] Policy 4(c)(i) nor legitimate noncommercial or fair uses under Policy 4(c)(iii).” Am. Auto. Ass’n, Inc. v. Jack Holder, NAF Case No. FA1227171 (Dec. 12, 2008).

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, which are set forth in paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

Respondent’s registration and use of the confusingly similar domain name to display advertisements for Complainant’s competitors constitutes a disruption of Complainant’s businesses and is further evidence of bad faith registration. See Am. Auto. Ass’n, Inc. v. AAA Vacation Club c/o Conrad Nizynski, NAF Case No. FA1169994 (May 14, 2008) (finding that respondent’s use of the confusingly similar domain name <aaavacationclub.com> to advertise the services of AAA’s competitors disrupted AAA’s business and constituted bad faith use and registration); Am. Auto. Ass’n, Inc. v. Tex. Int’l Prop. Assocs.,
WIPO Case No. 2007-0592 (August 13, 2007).

Respondent’s actual or constructive knowledge of Complainant’s trademarks, based on their U.S. and international registrations, is also evidence supporting a finding of bad faith. See Am. Auto. Ass’n, Inc. v. Nevis Domains LLC,
WIPO Case No. D2006-0489 (June 13, 2006); see also Am. Auto. Ass’n, Inc. v. AAA-Vacationsunlimeted,
WIPO Case No. D2009-0373 (May 3, 2009) (finding that respondent’s knowledge of AAA marks may be inferred because the marks were registered with the USPTO and well known in the industry); Am. Auto. Ass’n, Inc. v. PerkinsPestControl c/o Del Rich and 1&1 Internet, Inc.,
WIPO Case No. D2009-1379 (December 7, 2009) (finding as further evidence of bad faith that “Complainant’s rights in its marks are well-established and well-known throughout the United States and in other parts of the world”). Moreover, Respondent renewed the domain name registration and continues to maintain the disputed domain name and website despite receiving actual notice from Complainant of its unauthorized registration and use on multiple occasions. See Am. Auto. Ass’n, Inc. v. Nevis Domains,
WIPO Case No. D2006-0489 (June 13, 2006).

Accordingly, the Panel finds that Complainant has established that Respondent registered and used the domain name in bad faith, pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aaaautoinsurance.net> be transferred to Complainant.